WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alpargatas S.A and Alpargatas Europe, S.L.U v. Domain Administrator, See PrivacyGuardian.org / Mandy Maurer, Paul Lehrer, Maria Melikssa, Stefan Embla, Elma Henrik, Andrej Lapsin, Yusuf Lindgren, Isabelle Broudic, Arvidsson Nyberg, Lena Waechter
Case No. D2021-2386
1. The Parties
The Complainants are Alpargatas S.A, Brazil, and Alpargatas Europe, S.L.U, Spain, represented by PADIMA, Abogados y Agentes de Propiedad Industrial, S.L., Spain.
The Respondents are Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Mandy Maurer, Germany; Paul Lehrer, Germany; Maria Melikssa, Germany; Stefan Embla, Germany; Elma Henrik, Germany; Andrej Laspin, Germany; Yusuf Lindgren, Germany; Isabelle Broudic, France; Arvidsson Nyberg, Germany; and, Lena Waechter, Germany.
2. The Domain Names and Registrars
The disputed domain names <havaianasklipklapper.net>, <havaianasshoesireland.com>, <havaianassoldes.com>, <havaianasstorephilippines.com> and <tonghavaianasfrance.com> are registered with NETIM SARL.
The disputed domain names <havaianasonlineportugal.com> and <havaianasslippersindia.com> are registered with Hosting Concepts B.V. d/b/a Openprovider.
The disputed domain names <havaianassalesouthafrica.com> and <havaianassandalsnz.com> are registered with NameSilo, LLC.
The disputed domain name <havaianasshoessg.com> is registered with Gransy, s.r.o. d/b/a subreg.cz (together with NETIM SARL, Hosting Concepts B.V. d/b/a Openprovider, and NameSilo, LLC, collectively hereinafter referred to as the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2021. On July 22, 2021, the Center transmitted by emails to the Registrars requests for registrar verification in connection with the disputed domain names. On July 22, 2021, and 23, 2021, the Registrars transmitted by emails to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on July 29, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on August 2, 2021.
The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on August 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 24, 2021. The Respondents did not submit any Response. Accordingly, the Center notified the Respondents’ default on September 7, 2021.
The Center appointed Steven A. Maier as the sole panelist in this matter on September 17, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Consolidation of Proceedings
The Complainants bring these proceedings against ten different named Respondents but ask that the proceedings be consolidated. As discussed in section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”):
“Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.”
The Complainants rely principally on commonalities between the underlying registration details as disclosed by the Registrar and similarities in the websites to which the respective disputed domain names resolve.
Having reviewed the Complainants’ submissions, the Panel finds that:
1. Nine of the ten disputed domain names were registered within a relatively short time window, i.e. between March 15, 2021 and April 7, 2021. The remaining disputed domain name was registered soon afterwards, on May 27, 2021.
2. The registration details of all ten of the disputed domain names follow a similar pattern, namely:
(a) a personal first name and surname;
(b) an apparent street address in Germany; and
(c) an email address comprising a combination of letters and numbers and “@yeah.net”.
3. The websites to which the disputed domain names have resolved fall into similar categories. Specifically:
(a) the disputed domain names <havaianassandalsnz.com>, <havaianasonlineportugal.com>, <havaianasslippersindia.com>, havaianasshoessg.com>, <havaianasshoesireland.com>, <havaianasstorephilippines.com>, and <tonghavaianasfrance.com> have resolved to websites having a substantially identical appearance and structure;
(b) the disputed domain names <havaianasklipklapper.net> and <havaianassoldes.com> have resolved to websites having a highly similar appearance and structure; and
(c) the remaining disputed domain name, <havaianassalesouthafrica.com> has resolved to a website with several features in common with those referred to in sub-paragraph (b) above.
4. A number of the disputed domain names referred to in sub-paragraph 3(a) above have the same registrars as certain of the disputed domain names in both sub-paragraphs 3(b) and 3(c), thereby implying a further connection between those disputed domain names.
The Panel finds in the circumstances that the Complainants have made out a prima facie case that the ten disputed domain names are subject to common control. None of the Respondents having disputed the Complainants’ submissions, or that consolidation would be fair and equitable to all parties, the Panel directs that the proceedings be consolidated accordingly.
5. Factual Background
The Complainant Alpargatas S.A is a company registered in Brazil and is a supplier of footwear including
flip-flop sandals under the name and trademark HAVAIANAS. The Complainant Alpargatas Europe, S.L.U is the exclusive licensee of the trademark HAVAIANAS in Europe.
The Complainants are the owners of registrations for the trademark HAVAIANAS including, for example, the following:
- European Union Trade Mark number 5264148 for the word mark HAVAIANAS, registered on July 3, 2007, in International Classes 14, 18, and 24 (the “Word Mark”);
- European Union Trade Mark number 3772431 for the figurative mark HAVAIANAS, registered on September 20, 2005, in International Class 25 (the “Figurative Mark”).
The disputed domain names were registered on the following dates:
<havaianassandalsnz.com> on March 31, 2021
<havaianasonlineportugal.com> on April 2, 2021
<havaianasslippersindia.com> on March 30, 2021
<havaianasshoessg.com> on April 6, 2021
<havaianasshoesireland.com> on March 29, 2021
<havaianasstorephilippines.com> on April 2, 2021
<tonghavaianasfrance.com> on April 7, 2021
< havaianasklipklapper.net> on May 27, 2021
<havaianassoldes.com> on March 15, 2021
< havaianassalesouthafrica.com> on April 7, 2021
The Complainants have produced evidence that all ten of the disputed domain names have resolved to websites purporting to offer the Complainants’ shoes for sale online. All of the websites prominently feature both the Word Mark and the Figurative Mark. None of the websites appears to include any disclaimer or indication to the effect that the operator of the website is not associated with the Complainants.
6. Parties’ Contentions
The Complainants submit that all of the disputed domain names contain their trademark HAVAIANAS and are therefore identical or confusingly similar to that trademark.
The Complainants submit that the Respondents have no rights or legitimate interests in respect of the disputed domain names. They say that their HAVAIANAS mark is known worldwide and that the Respondents have no authorization to use that trademark. They contend that by joining their trademark to terms such as “shoes” or “store”, or to country names, the Respondents are causing confusion to Internet users searching for the Complainants’ products.
The Complainants submit that the disputed domain names were registered and are being used in bad faith. They say that the Respondents were obviously aware of their trademark HAVAIANAS because they have used the disputed domain names to offer the Complainants’ shoes. The Complainants submit that by offering the Complainants’ branded items on their websites without any disclaimer, the Respondents are seeking to divert Internet users seeking authorized HAVAIANAS products and to capitalize on the reputation of their trademark for financial gain. The Complainants add that the Respondents are damaging the Complainants’ business in the countries related to the disputed domain names by offering their products at discounted rates.
The Complainants request that the disputed domain names be cancelled.
The Respondents did not reply to the Complainant’s contentions.
7. Discussion and Findings
In order to succeed in the Complaint, the Complainants are required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainants have established that they are the owners of registered trademark rights for the mark HAVAIANAS. Each of the disputed domain names comprises the term HAVAIANAS in conjunction with one of the dictionary words “flip-flops” (in translation), “store”, “shoes”, “online”, “slippers”, “sale” (including in translation) and/or a geographical name or abbreviation such as “france”, “philippines”, “ireland”, “portugal”, “india”, “sg”, “southafrica”, or “nz”. None of these dictionary words or geographical terms distinguishes the relevant disputed domain name from the Complainants’ HAVAIANAS trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. The Panel therefore finds that each of the disputed domain names is confusingly similar to a trademark in which the Complainants has rights.
B. Rights or Legitimate Interests
In the view of the Panel, the Complainants’ submissions set out above give rise to a prima facie case that the Respondents have no rights or legitimate interests in respect of the disputed domain names. However, the Respondents have not filed a Response in this proceeding and have not submitted any explanation for their registration and use of the disputed domain names, or evidence of rights or legitimate interests on their part in the disputed domain names, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise.
In certain limited circumstances, it may be permissible for an unauthorized supplier of goods or services to use a domain name which incorporates another party’s trademark for the purpose of offering that trademark owner’s goods or services. The criteria accepted by previous UDRP panels for such legitimate use are set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, and are further discussed in section 2.8.1 of the WIPO Overview 3.0. Those criteria include the requirements that the relevant website must accurately and prominently disclose the registrant’s relationship with the trademark holder.
In this case, the Panel finds that the Respondents’ websites have failed to disclose the absence of any commercial relationship between the Complainants and the Respondents. On the contrary, the Respondent’s websites prominently display the Word Mark and the Figurative Mark in conjunction with the Complainants’ products and give an overall impression of an official association with the Complainants, which cannot confer rights or legitimate interests upon the Respondents.
There being no other evidence before the Panel of any such rights or legitimate interests, the Panel finds that the Respondents have no rights or legitimate interests in respect of any of the disputed domain names.
C. Registered and Used in Bad Faith
Since each of the disputed domain names has been used for the purpose of websites purporting to offer the Complainants’ products for sale, it is clear to the Panel that the Respondents had the Complainants’ HAVAIANAS trademark in mind, and intended to refer to that trademark, at the time of their registration of each of the disputed domain names.
The Panel accepts the Complainant’s contention that, by combining the Complainants’ HAVAIANAS trademark with words such as “shop” and “sale” and/or with geographical terms, the disputed domain names are likely to mislead a significant number of Internet users into believing that the disputed domain names are operated by, or with the authorization of, the Complainants. The Panel accepts the Complainants’ submission that the Respondents have no such authorization to use the Complainants’ trademark and finds that that the disputed domain names are inherently misleading, and that the Respondents are causing further confusion by their prominent use of the Word Mark and the Figurative Mark on their websites.
The Panel finds therefore that the Respondents have registered and used the disputed domain names for the purpose of attracting Internet users to their websites under the mistaken impression that those websites are operated or authorized by, or otherwise legitimately associated with the Complainants. The Panel finds in particular that, by using the disputed domain names, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to their websites by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of their websites or of products or services on their websites (paragraph 4(b)(iv) of the Policy).
The Panel therefore finds that the disputed domain names have been registered and are being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <havaianasklipklapper.net>, <havaianasonlineportugal.com>, <havaianassalesouthafrica.com>, <havaianassandalsnz.com>, <havaianasshoesireland.com>, <havaianasshoessg.com>, <havaianasslippersindia.com>, <havaianassoldes.com>, <havaianasstorephilippines.com>, and <tonghavaianasfrance.com> be cancelled.
Steven A. Maier
Date: September 28, 2021